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Sunday, August 16, 2009

Making your ideas fly

By Ric Richardson 19th August 2009. Expanded and updated 29th August.

A lot of people I meet are desperate to try and see their ideas and inventions come to life. My heart goes out to you. Unfortunately I can’t help everyone and the fact is that I’m an inventor. Being an entrepreneur is only a necessary evil in my book since I’d prefer to invent something, make sure it works, and hand it off to someone so I can get on with the next thing.

Most people that meet me, need me to be an entrepreneur… to evaluate their idea or invention, to mentor them. Some people even privately or overtly ask me to invest. Unfortunately that person is not me for the most part. However I love sharing information and things I’ve learned about inventing. What follows is some things I’ve learnt over the years that may be of help:

Disclaimer: I am not a lawyer and the following advice is only based on my experience so please consult professionals before making important legal decisions.

CONCEPTIONThis is usually the easiest part of being an inventor… usually you see something you know other people don’t see. A way of solving a problem… or a new technology with interesting possibilities. Usually you see this idea in your minds eye long before you see it in reality. So how to get from mind to real? There are four stages of invention development I use:

Virtual proof of concept

Proof of concept

Prototype

Production proof

Virtual proof of concept is useful when the components of what I want to invent are already existing with specifications and dimensions I can use to do a virtual or projected proof of concept. For example I did this with the automotive carbon scrubber where I could take the performance data of submarine based carbon scrubbers for cleaning air and apply the specs to an automotive engine exhaust to simulate the possible advantages. This approach enabled me to get a long way in assessing the invention before incurring the cost and the possible damage to my Lincoln Navigator before actually doing a live proof of concept.

A proof of concept is a working model of an invention that only has to work in a controlled environment such as when you are handy to keep things from falling apart during a demo. It can be used as proof that the invention works but does not need to be so robust as to work unattended or in the hands of someone else.

A prototype is a more robust version of your invention that can be given out for basic testing. It does not need to be able to handle use by hundreds or even dozens of users but should withstand non attended use by a small group of targeted people. Prototypes are handy for evaluation by Angel investors or early management prospects. Prototypes also generate confidence in that they are robust enough to be independently tested and verified. This is really essential if you are expecting people to invest in your product.

A production proof is a pre-production version of your invention. It may not withstand industrial use but the whole product will be present and easily used to produce the full production version of your invention. For example, I use a web enabled database program called Filemaker for fast prototyping. It is very quick to use for web based technologies or inventions but can also be made to look and behave like a production quality internet database. Even though the software will start to run into trouble with more than 1000 visitors in a day it is possible to build a complete web solution in a fraction of the time it takes to do a full production version. More importantly it can be used by the production team as a fully operational model for a hi capacity hi performance website built using cloud computing and much more complex and powerful web technologies. This approach completely does away with specifications and documentation… the coders can look directly at the prototype and know exactly what is expected of them. Plus you can start making money while your customer base ramps up.

PATENTING

When to patent? The time to write your patent is as soon as you have something real... even a virtual proof of concept is enough to be sure you have something to patent... of course there is strategic advantage in waiting if you don't think you can get your product selling and some income before the mandatory one year when you have to start spending money on your patent... but to me time is of the essence.. the first person IN with the best idea wins.

It's important to remember that your patent will have to use the best example (called the example embodiment) of the patented invention as the basis for your application so you do need to take some time to put your best foot forward. For me I keep working on my invention until I see something that clearly separates it from anything I know is out there. Then I know I have a good shot at getting something that is patentable.

What to patent? There are two schools of thought regarding writing patents.. the long stroke and the short stroke methods. The long stroke method involves including every feature you could possibly think of in your patent and having your lawyer write as many claims as possible. The strategy here is that when you come to enforce it in the future, the opponents attorneys will have to spend so much time and money just to understand your patent that most small to medium size companies just give in and pay for a license rather than fight you. This seems to be a strategy of many corporate generated patents and to me is not in the real spirit of what the patent laws are made for.

I prefer the short stroke method, where the patent is as short, as direct and as simple as legally possible with a very specific focus on the most important feature of your invention rather than try to include every aspect of your invention... I frequently ask myself "What is the part of my invention that everyone will have to copy to duplicate it with any success?". For example I recently helped a young lady who was patenting a portable baby bottle cleaner and warmer. She could have patented lots of features of what she had done but it was the portable water supply and cleaning method that stood out as essential to the success of the invention. In a way this feature is the boom gate that stops competitors from quickly duplicating her invention so I suggested that she make sure it is included and featured in her patent application.

Another advantage of the short stroke method is that it reduces costs and can be a lot more handy for you during business building. For example a simpler patent means the professional prior art search (the search for any pre-existing invention of your type) is much easier, faster and cheaper (especially if you are using a professional search company). Next it is much easier for investors, business partners and customers to understand if you feel it is strategically important to let them see your provisional patent. Oh, and of course it is much easier for your lawyer to grasp in order to write the claims for you (more on that later).

A word on software patents. There has been much discussion about the validity of software patents. From what I can tell the big problem is when people try to patent a process that can be run on one processor and looks more like a math's calculation than a patentable process. Its important here to show diagrams of how your software process includes multiple computers or multiple types of computer hardware. This area obviously deserves a lawyers advice but it is not as scary as you may think from the way it is being talked about in the technical press.

Example case: Bob McTavish and his foot fin system. A good friend of mine also featured on Australian Story started talking to me about his latest idea. As he explained the principle I could see it was patentable. Would you believe he actually argued with me that it wasn't! But he saw patents as a way of protecting a manufactured thing rather than a process or a method of manufacture... after discussing the principles of his invention I helped him come up with the scientific basis for his invention and the relationship between a surfers back foot and where the fin should be placed. Before we knew it we had a filed patent for him in the USPTO.

Subsequently we have also filed a patent for his idea of a lateral fin plug, but the basic principle about the new way to place fins on a surfboard are far more important, and simple to understand. A more strategic conceptual patent is far more effective in blocking someone who wants to copy or steal the idea. Looking at his plug idea (which he originally wanted to patent) I can see 3 or 4 ways of working around it instantly, but that's the difference between an inventor and a business man, the ability to see the core reason why things are successful rather than simply trying to protect the thingy that gets sold.

HOW TO PATENTPatent strategy. I almost always do a provisional patent and almost always file in the US first. The reason? A provisional is simple to do, its optional to have a lawyer check it... so its fast. Also in the states I get a presumption that the invention date was actually 12 months before my provisional file date. Filing a provisional means I get 12 months to see if the invention is viable and enables me to talk to people openly without NDA's (non disclosure agreements) and all that hoo ha. If it all works out and the invention is worth going to full application, then I proceed and if protection outside the US is needed I file a PCT application, but even then I get another 12 months after filing my full application to file my PCT with all its additional costs. Here is an example of the advantages of my approach.

File my invention as provisional in US (<$200 electronic filing): I get a file date that works for any PCT country including Australia.

I get 12 months before I have to do a full application. This delays lawyers costs and search fees for 12 months and allows me to make some money from the invention before my costs start.

I get another 12 months before I have to file my PCT and its extra $5-10k of expense.

Plus I get a presumption of inventorship that predates my US filing date by 12 months if I am contested in the States.

Why not patent in Australian first? If your invention is of any significance it will be sold in the US and the main licensees or possible infringers will be US based. So focus there first for all your protective measures. The first patent has to be the best written and should be written for the jurisdiction in which it may be contested. If there is going to be prior art it is more likely to be there rather than here. Why go through the hard work of writing a patent and working with a lawyer if you only have to turn around and do it again when you go to the US market? (which is inevitable for any successful invention).

Don’t show anyone key concepts you plan to patent. This is important. The patent laws in the states are different to Australia so don't talk to anyone about your invention until you have filed your provisional in the States. The laws here tend to presume that you give up your rights to patent protection if you don't make a reasonable effort to keep the invention secret until a patent (either provisional or full) is filed.

How to write your patent? Would you believe I used a book to help me learn who to write patents? Its called "Patent Pending in 24 hours" by Nolo Press and can be downloaded here as an ebook if you want to get going immediately. It's really excellent but I have sped up some sections and simplified my process to suit my circumstances, but if you want to get the low down on patent writing this is the best place to start in my mind.

Here is how I write my patents generally:

I do an internet search for anything that might sound like my invention. I then use terms and words that seem to be used to describe similar inventions in my search of the USPTO database. I do this for two reasons: of course I want to know if someone has done my invention before, but also very importantly, I want to see how others have described or drawn their inventions for ideas on how to do the patent drawings for my invention. I do not include my search results in my provisional but I do keep them to give them to my attorney when it comes time to do my full application.

Drawings: Then I work out how I'd describe my invention to someone if I had to explain it using a whiteboard (ie drawings and diagrams). What drawings would I use? What logic process/ chart? Would their be close-ups of sections of the invention or cutaways to show inner workings etc. Id have a go at a few drafts of this and refine the drawings and minimize the number of them. Some of my patent drawings are hand drawn but most of them are done in MS PowerPoint and Macromedia Fireworks an old drawing program I love. Next I hand draw or sometimes computer draw little squiggly lines from each important part of the drawing and link them to to a unique number. The number is later placed in the text of the patent to help the reader know what you are talking about in the text. Important: make sure the drawings show the best example (embodiment) of the invention that you can think of at the time.

Background: this goes at the front of your provisional. It talks about what is already out there (prior art) and why it all doesn't work or why the invention is needed to solve a specific problem. This does not need to be too detailed, but should include the next closest most popular solution or your next closest competitor and show clearly the failings and what your invention does to address them.

Figures List: This is a list of the figures (drawings) you will be using. Its a simple way to make sure a full list of drawings is included in your filing.

Description and operation: This is where I go thru each figure explaining each part of the drawing and how it works with the other parts to achieve the desired effect of the invention. In the NOLO book they separate these sections out (ie separate Description and Operation sections) but I find it easier to do it all in the same section. For example a surfboard fin patent I wrote recently said something like this "the left most plug slot 10 sits to the right of the multi-slot lateral surfboard plug 15". You have to spell everything out so there is no question about what you are talking about. It's a bit painful but will help you no end later on if your provisional gets contested.

Alternative Embodiments: last thing is to write the alternative ways in which the invention could be made or the same effect achieved. This is where you think like a competitor and try to describe in broad terms what you would change or modify to get around your own patent. For example in the fin system patent Bob McTavish and I said something like "an alternative system would be any plug system that allows a surfboard fin to be placed in two or more positions in a lateral or perpendicular direction from the surfboards center line".

Claims: This is the legal guts of the patent. I never write claims. Claims use technical and legal language and need to be crafted by a professional. The US patent laws allow claims to be left out of provisional filings and that suits me down to the ground. If you are going to pay a lawyer the minimum possible to get filed then it is the best to spend that money later when you are doing your full application.

I then let a trusted confidant (someone who is competent in the chosen field of your invention) check the filing for errors or stuff that makes no sense and file electronically with the USPTO web site as soon as possible. It will cost you less than $200 and a filing date/ confirmation will be emailed to you. You now have 12 months to get your invention up and going!

When it comes time to do full application. I have written a lot of patents so my process is pretty cheap but you can use it as a guide. I usually spend about $5000 for my full applications. This is comprised of a $2500 prior art search by a professional search firm in Washington DC and $2500 for my lawyer to edit my patent and write the claims. I then budget $5k to file a PCT if I think I need protection outside the US .

The prior art search is from a firm that hires former patent examiners who have the latest understanding of the patent laws and also are familiar with the search terms used to find existing or competing patents. When a current examiner at the USPTO sees the prior art search you submit with your full application, they can see that someone very experienced and current has done the search for you and they will be more likely to develop the confidence that your patent is novel/ unique and worthy of a patent grant.

For someone who may not have written the most succinct patent, there may be lots of editing and lots of time explaining things to your attorney so I'd expect to pay up to 10k for my first few full patent applications including a decent patent search.

PROMOTION - LAYING CLAIM TO YOUR IDEA

The beaut thing about patents is that they enable you to talk openly about what you are doing. Sooo, go do it! Write an article about it for a trade magazine, or submit it to an invention TV show or a local newspaper. Make sure to do this is a public way targeting the market you eventually want to sell to... if its going to the US then get US publicity. A popular gizmo site... wherever you can go to make sure people know what you invented and what makes it unique.

This has two important benefits. The most obvious is it starts connecting you with people that may want to use, distribute or buy your product but also it enables you to test the waters to see if anyone out there claims to have done the invention before you... This has a hidden side benefit. You see if someone has had an opportunity to contest your patent but doesn't do so, they give up many of their rights to come after you later. It just clears the air and shows the patent office and prospective licensees that you are trying to do the right thing...

Promotion also helps rally support around the next phase of your invention which is to build a business around it. Prospective investors may see the publicity or even if you approach them directly, the independent promotion gives you credibility with them... its really something you can't ignore doing ...and doing properly.

BUSINESS BUILDING

Once you have something of substance by following the last few steps, it is time to start building a business around your invention.

The problem with the original inventor/ patent protection model. When the patent system was first setup by western governments the idea was to protect inventors from having their ideas stolen from them by predatory people and companies with more resources. The idea being that the inventor could invent the thing, patent it, develop it, learn how to manufacture, sell and market it and then build the company so that they had something to retire with later on in life. This model assumes that an inventor would have skills as an entrepreneur, a manager, a marketer etc etc... or that the inventor has enough time to learn how to do all these things.

There are a handful of people that have done this successfully. Edison, Gates, Jobs. But for most of us the reality is that we will never have the skills or learn fast enough to not seriously hamper the ability of your invention to fly. On this basis I like to use a series of holding companies that allows you to share equity with other people that supply capital or expertise, but you can still retain ultimate control of your invention.

So in my model, you set up a holding company which becomes the owner of the patent. You then sell some stock in the company to angel investors who give you enough money to fund the building of a business plan by a professional management team (ie CEO and key execs) for 6 months to a year to get their own business plan and funding together. They in turn setup a trading company which will will be owned at a minimum of 51% by the parent holding company (in return for the patent rights). The remaining 49% is to be dolled out sparingly as market entry is funded and milestones reached by management. In this model you are balancing the three main components of a successful technology business: a great idea/ founders, money and management. Plus, you as inventor always retain ultimate veto control.

How does this work in Australia? It's basically the same except that the parent company is Australian and the market entry company is in the US. This means you have a special need to find as part of your parent company some management that has experience in starting and running US based companies and are willing to do whatever travel is needed to represent the parent companies interests in ensuring that the US company is a success.

If you would like explanations and expansions on the ideas presented here please make your comments below and I will try and answer your queries. Regards,